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` Paper 32
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` Entered: March 19, 2018
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`Trials@uspto.gov
`571-272-7822
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`v.
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`____________
`
`Case IPR2017-007141
`Patent 6,470,399 B1
`____________
`
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and JAMES B. ARPIN,
`Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318 (a) and 37 C.F.R. § 42.73
`
`
`
`1 Case IPR2017-01808 has been joined with this proceeding.
`
`

`

`IPR2017-00714
`Patent 6,470,399 B1
`
`
`
`INTRODUCTION
`I.
`ZTE (USA) Inc. and ZTE Corporation (collectively, “ZTE”) filed a
`corrected Petition requesting an inter partes review of claims 1−3, 5, 6, 11,
`14, and 15 (“the challenged claims”) of U.S. Patent No. 6,470,399 B1
`(Ex. 1001, “the ’399 patent”) and a Declaration of Kevin Almeroth, Ph.D.
`(Ex. 1003). Paper 9 (“Pet.”). Papst Licensing GmbH & Co., KG (“Patent
`Owner”) filed a Preliminary Response. Paper 8 (“Prelim. Resp.”). We
`instituted the instant inter partes review as to claims 1−3, 5, 6, 11, 14, and
`15. Paper 10 (“Dec.”).
`Subsequent to institution, we granted the Motion for Joinder filed by
`Olympus Corporation and Olympus America Inc. (collectively, “Olympus”),
`and Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
`(collectively, “Samsung” or “Petitioner”), joining Case IPR2017-01808 with
`the instant proceeding. Paper 16. We also granted a Joint Motion to
`Terminate with respect to ZTE (Paper 28) and a Joint Motion to Terminate
`with respect to Olympus (Paper 23).
`Patent Owner filed a Response (Paper 15, “PO Resp.”) and a
`Declaration of Thomas Gafford (Ex. 2001). Petitioner filed a Reply.
`Paper 20 (“Reply”). A transcript of the telephonic oral hearing held on
`February 13, 2018, has been entered into the record as Paper 31 (“Tr.”).
`This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a).
`For the reasons that follow, Petitioner has demonstrated by a preponderance
`of the evidence that claims 1−3, 5, 6, 11, 14, and 15 of the ’399 patent are
`unpatentable.
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`IPR2017-00714
`Patent 6,470,399 B1
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`
`A. Related Matters
`
`The parties indicate that the ’399 patent is involved in Papst Licensing
`GmbH & Co. KG v. Huawei Technologies Co., Ltd., Case No. 6:15-cv-
`01115 (E.D. Tex.) and other proceedings. Pet. 4–6; Paper 4, 2–5. The ’399
`patent also is involved in Cases IPR2016-01839 and IPR2016-01864. This
`Final Written Decision is entered concurrently with the Final Written
`Decisions in Cases IPR2016-01839 and IPR2016-01864.
`
`B. The ’399 Patent
`
`The ’399 patent describes interface devices for communication
`between a computer host device and a data transmit/receive device (e.g., a
`multi-meter, transmitting measured data to a computer). Ex. 1001, 1:9–13,
`1:48–51. According to the ’399 patent, using a specific driver to match very
`closely to an individual host system would achieve high data transfer rates
`across the interface, but the specific driver cannot be used with other host
`systems. Id. at 1:65–2:13. Several solutions to this problem were known in
`the art. Id. at 2:16–3:21. For example, IOtech introduced an interface
`device for laptops, using a plug-in card for converting the personal computer
`memory card association (“PCMCIA”) interface into a known standard
`interface (“IEEE 1284”). Id. at 2:19–24. The plug-in card provided a
`printer interface for enhancing data transfer rates. Id. at 2:24–28. In another
`example, a floppy disk drive interface was used for connecting a host device
`to a peripheral device. Id. at 3:6–10. The interface appeared as a floppy
`disk drive to the host, allowing a floppy disk drive and another peripheral
`
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`IPR2017-00714
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`device to be connected to the host device. Id. at 3:13–15.
`The ’399 patent indicates that its “invention is based on the finding
`that both a high data transfer rate and host device-independent use can be
`achieved if a driver for an input/output device customary in a host device” is
`utilized. Id. at 4:23–27. Figure 1 of the ’399 patent, reproduced below,
`illustrates a block diagram of an interface device.
`
`
`As shown in Figure 1, interface device 10 connects to a host device
`via host line 11, and to a data transmit/receive device via output line 16. Id.
`at 5:47–63. Interface device 10 includes first connecting device 12, second
`connecting device 15, digital signal processor 13, and memory means 14.
`Id. In a preferred embodiment, the interface device is attached to a host
`device via a multi-purpose interface—e.g., a small computer systems
`interface (“SCSI”)—which includes both an interface card and the driver for
`the interface card. Id. at 4:40–46, 8:29–32. According to the ’399 patent,
`SCSI interfaces were known to be present on most host devices or laptops.
`Id. at 9:32–33. By using a standard interface of a host device and by
`simulating an input/output device to the host device, the interface device “is
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`automatically supported by all known host systems without any additional
`sophisticated driver software.” Id. at 12:23–29.
`
`C. Illustrative Claim
`
`Of the challenged claims, claims 1, 11, and 14 are independent.
`Claims 1 and 11 recite interface devices, and claim 14 recites a method for
`communicating between a host device and a data transmit/receive device via
`an interface device. Each of claims 2–3, 5, and 6 depends directly or
`indirectly from claim 1. Claim 15 depends directly from claim 14. Claim 1
`is illustrative and is reproduced below with disputed limitations emphasized:
`1. An interface device for communication between a host device,
`which comprises drivers for input/output devices customary in a
`host device and a multi-purpose
`interface, and a data
`transmit/receive device, the data transmit/receive device being
`arranged for providing analog data, comprising:
`a processor;
`a memory;
`a first connecting device for interfacing the host device with the
`interface device via the multi-purpose interface of the host
`device; and
`a second connecting device for interfacing the interface device
`with the data transmit/receive device, the second connecting
`device including a sampling circuit for sampling the analog data
`provided by the data transmit/receive device and an analog-to-
`digital converter for converting data sampled by the sampling
`circuit into digital data,
`wherein the interface device is configured by the processor and
`the memory to include a first command interpreter and a second
`command interpreter,
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`wherein the first command interpreter is configured in such a
`way that the command interpreter, when receiving an inquiry
`from the host device as to a type of a device attached to the
`multi-purpose interface of the host device, sends a signal,
`regardless of the type of the data transmit/receive device attached
`to the second connecting device of the interface device, to the
`host device which signals to the host device that it is an
`input/output device customary in a host device,
`whereupon the host device communicates with the interface
`device by means of the driver for the input/output device
`customary in a host device, and
`wherein the second command interpreter is configured to
`interpret a data request command from the host device to the
`type of input/output device signaled by the first command
`interpreter as a data transfer command for initiating a transfer of
`the digital data to the host device.
`Ex. 1001, 12:42–13:12 (emphasis added).
`
`D. Applied References
`
`Petitioner relies upon the references listed below.
`(Ex. 1007)
`Lin
`
`US 6,522,432 B1
`Feb. 18, 2003
`(Ex. 1005)
`Aytac
`US 5,758,081
`
`May 26, 1998
`Aytac’s source code in U.S. Patent Application No. 08/569,846
`(Ex. 1020, 77–527, “Aytac’s source code”).
`AMERICAN NATIONAL STANDARDS INSTITUTE, INC., American
`National Standard for Information Systems – Small Computer System
`Interface-2, ANSI X3.131-1994 (1994) (Ex. 1006, “the SCSI
`Specification”).2
`
`
`2 Citations to the SCSI Specification refer to the original page numbers.
`6
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`Patent 6,470,399 B1
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`
`Admitted Prior Art disclosed in the ’399 patent (see, e.g., Ex. 1001,
`4:23–30, 4:42–44, 5:10–13, 5:64–67, 6:7–19, 6:22–32, 6:28–32, 9:32–38,
`11:9–22).
`
`E. Instituted Ground of Unpatentability
`
`We instituted this trial based on the sole ground that each of claims 1–
`3, 5, 6, 11, 14, and 15 is unpatentable under § 103(a)3 as obvious over the
`combined teachings of Aytac, Lin, the SCSI Specification, and the Admitted
`Prior Art in the ’399 patent (Ex. 1001). Dec. 21.
`
`II. DISCUSSION
`A. Claim Construction
`
`Patent Owner believes the ’399 patent expired on March 3, 2018
`(20 years from the ’399 patent’s March 3, 1998, filing date, Ex. 1001 at
`[22]). Prelim. Resp. 18. Claims of an expired patent are given their
`ordinary and customary meaning in accordance with Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) (“Phillips”). See Wasica Fin.
`GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1279 (Fed. Cir. 2017)
`(applying the Phillips standard to construe the claims of an expired patent in
`an inter partes review).
`In the Decision on Institution (Dec. 7−8), we noted that the U.S. Court
`of Appeals for the Federal Circuit (the “Federal Circuit”) has construed
`
`3 Because the claims at issue have a filing date prior to March 16, 2013, the
`effective date of the Leahy-Smith America Invents Act, Pub. L. No. 112-29,
`125 Stat. 284 (2011) (“AIA”), we apply the pre-AIA version of § 103.
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`certain terms under the Phillips standard in connection with a previous
`District Court proceeding involving the ’399 patent. In re Papst Licensing
`GmbH & Co. KG Litig. v. Fujifilm Corp., 778 F.3d 1255 (Fed. Cir. 2015);
`Ex. 1008 (“Papst” or the “Papst Decision”). We adopted those claim
`constructions set forth in the Federal Circuit Papst Decision (reproduced in
`the table below).
`After institution, Patent Owner agrees with those Federal Circuit
`claim constructions, and directs our attention to the District Court Claim
`Construction Order issued on March 7, 2017, in another related proceeding
`involving the ’399 patent. PO Resp. 18−19; Ex. 2004. We have considered
`the District Court Claim Construction Order, but determine that we need not
`further supplement the Federal Circuit’s claim constructions that we adopted
`in the Institution Decision, except for the claim terms discussed below, to
`resolve the issues before us. See Nidec Motor Corp. v. Zhongshan Broad
`Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that
`“we need only construe terms ‘that are in controversy, and only to the extent
`necessary to resolve the controversy’”) (citing Vivid Techs., Inc. v. Am. Sci.
`& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). For example, as Patent
`Owner notes (PO Resp. 28, 30), whether the term “input/output device
`customary in a host device” includes “at the time of the invention” is not
`pertinent to this proceeding. We also note that the patentability of the
`challenged claims is determined based on prior art that is available before or
`at the time of the invention.
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`Patent 6,470,399 B1
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`1. The Federal Circuit Claim Constructions
`
`The following table summarizes the claim constructions set forth in
`the Federal Circuit Decision in Papst, 778 F.3d at 1261−70 (Ex. 1008),
`which we adopt.4
`
`Claim term
`
`District Court
`Construction
`
`Federal Circuit
`Construction
`
`“interface
`device”
`
`“second
`connecting
`device”
`
`may not be “a permanent
`part of either the data
`transmit/receive device or
`the host device/computer.”
`Papst, 778 F.3d at 1262.
`
`“is not limited to… a
`device that is physically
`separate and apart from,
`and not permanently
`attached to, a data device
`(or a host computer).” Id.
`
`“a physical plug or socket
`for permitting a user readily
`to attach and detach the
`interface device with a
`plurality of dissimilar data
`transmit/receive devices.”
`Id. at 1264.
`
`does not require “a
`physical plug, socket, or
`other structure that
`permits a user to readily
`attach and detach
`something else.” Id. at
`1265.
`
`
`4 The Federal Circuit treated the preamble of each claim as a claim
`limitation. Id. at 1266. Because the parties in the instant, inter partes
`review do not dispute that the preamble of each challenged claim is limiting
`(see, e.g., Pet. 28−41), we likewise treat the preamble of each claim as a
`claim limitation.
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`Claim term
`
`“data transmit/
`receive device”
`
`“virtual files”
`
`“input/output
`device
`customary in a
`host device”
`
`
`
`District Court
`Construction
`“a device that is capable of
`either (a) transmitting data to
`or (b) transmitting data to
`and receiving data from the
`host device when connected
`to the host device by the
`interface device.” Id. at
`1265.
`“files that appear to be but
`are not physically stored;
`rather they are constructed
`or derived from existing data
`when their contents are
`requested by an application
`program so that they appear
`to exist as files from the
`point of view of the host
`device.” Id. at 1267.
`“data input/output device
`that was normally present
`within the chassis of most
`commercially available
`computers at the time of the
`invention.” Id. at 1270.
`
`Federal Circuit
`Construction
`
`“need not be capable of
`communicating ‘when
`connected to the host
`device by the interface
`device.’” Id. at 1266.
`
`not limited to a file
`“whose content is stored
`off the interface device,
`though it includes such
`files.” Id. at 1268.
`
`not limited to a device
`“‘normally present within
`the chassis’ of a
`computer.” Id. (emphasis
`in original).
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`2. “whereupon the host device communicates with the interface device by
`means of the driver for the input/output device customary in a host
`device” or “the specific driver for the multi-purpose interface”
`Claim 1 recites “whereupon the host device communicates with the
`interface device by means of the driver for the input/output device
`customary in a host device.” Ex. 1001, 13:5−8. Claim 11 recites
`“whereupon the host device communicates with the interface device by
`means of the specific driver for the multi-purpose interface.” Id. at
`14:12−15. Claim 14 recites “whereupon the host device communicates with
`the interface device by means of the usual driver for the input/output device
`[customary in a host device].” Id. at 14:55−57. For convenience, we refer
`to these claim elements as the “communication” limitations in our analysis
`below.
`In connection with the recited drivers and multi-purpose interface, the
`Specification describes that “[d]river for input/output devices customary in a
`host device which are found in practically all host devices are, for example,
`drivers for hard disks for graphics devices or for printer devices,” and that
`“[d]rivers for other storage devices such as floppy disk drives, CD-ROM
`drives or tape drives could also be utilized.” Ex. 1001, 4:27−39. Claim 2
`depends from claim 1 and further requires the drivers for input/output
`devices customary in a host device to comprise a “hard disk driver.” Id. at
`13:13−17. Therefore, the term “driver for the input/output device customary
`in a host device” encompasses a hard disk driver.
`The Specification also explains that “the interface device according to
`the present invention is to be attached to a host device by means of a
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`multi-purpose interface of the host device which can be implemented, for
`example, as an SCSI interface or as an enhanced printer interface.” Id. at
`4:40−44. The Specification further describes that “communication between
`the host device and the multi-purpose interface can take place . . . also via
`specific interface drivers which, in the case of SCSI interfaces, are known as
`multi-purpose interface ASPI (advanced SCSI programming interface)
`drivers, . . . is normally included by the manufacturer of the multi-purpose
`interface.” Id. at 11:9−19. Claim 13 depends from claim 11, and further
`recites that “the multi-purpose interface is an SCSI interface, and wherein
`the specific driver for the multi-purpose interface is an ASPI manager.” Id.
`at 14:29−31. As such, the term “multi-purpose interface” encompasses a
`SCSI interface, and the term “specific driver for the multi-purpose
`interface,” as recited in claim 11, encompasses an ASPI driver. The parties
`do not dispute these constructions. PO Resp. 7, 39; Pet. 31−32, 62−65;
`Reply 6, n.5.
`For the first time in this proceeding, however, Patent Owner proposes
`a construction for the “communication” limitations that would import a
`negative limitation from the Specification into the claims, prohibiting the
`use of other software at any point in the communication process for
`additional unclaimed functionalities. PO Resp. 21−25, 36−37. In particular,
`Patent Owner argues that the challenged claims require “that the host device
`communicates with the interface device without resort to specialized
`software.” Id. In Patent Owner’s view, “[a]n important feature of the
`invention of the ’399 patent is that communications between the host
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`computer and the interface device are accomplished by customary drivers
`normally present on a host computer, and without resorting to specialized,
`non-customary software that would need to be loaded by a user.” Id. at 21.
`Patent Owner also argues that the Federal Circuit’s explanation as to “its
`understanding of Tasler’s interface device” (id. at 24), i.e., “[t]he interface
`device of the invention thus does not require that a ‘specially designed
`driver’ for the interface be loaded into a host computer” (Papst, 778 F.3d at
`1259 (emphasis added)), supports its contentions.
`However, even if we were to import a “without requiring” limitation
`from the Specification that is consistent with the Federal Circuit’s purported
`“understanding of Tasler’s interface device,” such a negative limitation
`would not prohibit the use of other software at any point in the
`communication process for additional unclaimed functionalities. See Celsis
`In Vitro v. CellzDirect, Inc., 664 F.3d 922, 926−27 (Fed. Cir. 2012) (holding
`that the negative limitation “without requiring” does not mean
`“prohibiting”). As the Federal Circuit explained in Celsis, the claim term
`“‘without requiring’ means simply that the claim does not require the
`[recited] step,” and “performance of that step does not preclude a finding of
`infringement.” Id. Therefore, we do not interpret the “communication”
`limitations of claims 1, 11, and 14 to require that the host device to
`communicate with the interface device solely by means of the recited driver,
`as suggested by Patent Owner (PO Resp. 37).
`Tellingly, U.S. Patent 8,966,144 B2 (“the ’144 patent”), which shares
`the same Specification with the ’399 patent, includes claims that explicitly
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`recite a file transfer process between the host device and the interface device
`“without requiring any user-loaded file transfer enabling software to be
`loaded on or installed in the computer at any time.” See, e.g., Ex. 3003,
`12:24−36 (emphasis added). This indicates that the sole named inventor of
`both the ’399 patent and the ’144 patent understood how to claim different
`features of his disclosed invention.
`As our reviewing court has explained, “each claim does not
`necessarily cover every feature disclosed in the specification,” and “it is
`improper to limit the claim to other, unclaimed features.” Ventana Med.
`Sys., Inc. v. BioGenex Labs., Inc., 473 F.3d 1173, 1181 (Fed. Cir. 2006).
`Furthermore, the court “has repeatedly cautioned against limiting the
`claimed invention to preferred embodiments or specific examples in the
`specification.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346–47
`(Fed. Cir. 2015); Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d
`870, 875 (Fed. Cir. 2004) (noting that “it is important not to import into
`claim limitations that are not a part of the claim”). “[I]t is the claims, not the
`written description, which define the scope of the patent right.” Williamson,
`792 F.3d at 1346–47; see also Phillips, 415 F.3d at 1312 (noting that “[i]t is
`a bedrock principle of patent law that the claims of a patent define the
`invention to which the patentee is entitled the right to exclude”).
`More importantly, it is undisputed that the plain and ordinary
`meaning of the claim language does not include any negative limitation,
`much less require all communication between the host device and interface
`device to occur solely by means of the recited driver without involvement of
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`any other software. Id. at 21−25, 36−37; Reply 7. In fact, neither the
`Federal Circuit Decision (Ex. 1008) nor the District Court Claim
`Construction Order (Ex. 2004), interpreting claim terms of the ’399 patent,
`sets forth such a negative limitation for any of the “communication”
`limitations. As Petitioner also points out (Reply 7), the plain meaning of the
`claim term “by means of” is “[w]ith the use of: owing to.” WEBSTER’S II
`NEW COLLEGE DICTIONARY, 678 (1995) (Ex. 1024, 3). Each of the claims
`also contains the transitional phrase “comprising.” In short, the plain and
`ordinary meaning of the claim language does not prohibit the presence of
`other software that may in some way be involved in the communication, so
`long as the recited driver is used in the communication. As such, we do not
`interpret “by means of” as “solely by means of.”
`Patent Owner’s proposed claim construction also is inconsistent with
`the Specification. Notably, the Specification teaches using other software to
`facilitate the communication between the host device and interface device.
`See, e.g., Ex. 1001, 5:64−67 (“Communication between the host system or
`host device and the interface device is based on known standard access
`commands as supported by all known operating systems (e.g. DOS,
`Windows, Unix).”), 6:55−7:37 (“the user can also create a configuration file,
`whose entries automatically set and control various functions of the interface
`device,” including sampling time and volume data to be acquired), 8:18−22
`(systems having software that “perform, e.g. mail functions or monitor
`processes which run continuously, for example, in multi-tasking
`environments”), 9:23−28 (an interface device having software to perform
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`optional data compression “of the data to be transferred from the data
`transmit/receive device to the host device”).
`For the reasons stated above, we decline to adopt Patent Owner’s
`proposed claim construction that requires all communication between the
`host device and interface device to occur solely by means of the recited
`driver. To be clear, we do not import a negative limitation and we do not
`interpret “by means of” as “solely by means of,” as prohibiting the use of
`any software other than the recited driver, at any point in the communication
`process for additional unclaimed functionalities.
`
`3. “data transmit/receive device”
`
`Patent Owner argues that the term “data transmit/receive device” as
`used in the ’399 patent is “a device that is capable of either (a) transmitting
`data or (b) transmitting data and receiving data.” PO Resp. 25−27.
`However, as Patent Owner points out (id.), the District Court Claim
`Construction Order expressly sets forth that “[i]n the context of the claims
`and the specification [of the ’399 patent], the ‘/’ in ‘data transmit/receive
`device’ can be readily understood as meaning ‘and/or.’” Ex. 2004, 36. In
`view of the Specification and claims, we agree with the District Court Claim
`Construction Order as to the term “data transmit/receive device.” Therefore,
`we construe the claim term “data transmit/receive device” to include a data
`transmit device (a device that is capable of transmitting data), a data receive
`device (a device that is capable of receiving data), or a data transmit and
`receive device (a device that is capable of both transmitting and receiving
`data).
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`B. Principles of Law
`
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) when in evidence, objective
`evidence of nonobviousness.5 Graham v. John Deere Co., 383 U.S. 1, 17–
`18 (1966)
`
`C. Level of Ordinary Skill in the Art
`
`In assessing the level of ordinary skill in the art, various factors may
`be considered, including the “type of problems encountered in the art; prior
`art solutions to those problems; rapidity with which innovations are made;
`sophistication of the technology; and educational level of active workers in
`the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation
`omitted). Dr. Almeroth testifies that a person having ordinary skill in the art
`at the time of the invention “would have had at least a four-year degree in
`electrical engineering, computer science, or related field of study
`
`
`5 Neither party proffers objective evidence of nonobviousness in this
`proceeding.
`
`17
`
`

`

`IPR2017-00714
`Patent 6,470,399 B1
`
`
`. . . and would also have either a master’s degree, or at least two years of
`experience in one of the relevant fields, computer science, computer
`systems, or peripheral devices.” Ex. 1003 ¶ 47. Patent Owner confirms that
`Petitioner’s assessment of the level of ordinary skill in the art are partially
`consistent with Patent Owner’s view, but, nonetheless, Patent Owner
`contends that an ordinarily skilled artisan would have at least three years of
`experience, or, alternatively, five or more years of experience without a
`bachelor’s degree, citing the Declaration of Mr. Gafford for support. Prelim.
`Resp. 17; PO Resp. 17−18 (citing Ex. 2005 ¶ 18). Patent Owner presents no
`argument as to why Petitioner’s assessment is erroneous or why Patent
`Owner’s assessment is more appropriate for this proceeding. More
`importantly, no argument presented hinges on whether either party’s
`assessment of the level of ordinary skill in the art is adopted.
`We do not discern a meaningful difference between the parties’
`assessments of a person of ordinary skill in the art. Moreover, Dr. Almeroth
`appears to satisfy either assessment. Ex. 1003 ¶¶ 48, 49; see Ex. 1004. Our
`analysis in this Decision is supported by either assessment. We, therefore,
`determine that Petitioner’s assessment of the level of ordinary skill in the art
`is appropriate. We further note that the prior art in the instant proceeding is
`consistent with this level of ordinary skill in the art at the time of the
`invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1354−55 (Fed. Cir.
`2001).
`
`18
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`

`IPR2017-00714
`Patent 6,470,399 B1
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`
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`D. Obviousness over Aytac in view of Lin, the SCSI Specification, and the
`Admitted Prior Art in the ’399 Patent
`Petitioner asserts that claims 1–3, 5, 6, 11, 14, and 15 are unpatentable
`under § 103(a) as obvious over the teachings of Aytac in combination with
`those of Lin, the SCSI Specification, and the Admitted Prior Art in the ’399
`patent, which supply additional information concerning sampling circuits in
`a scanner and the SCSI standard not made explicit in Aytac. Pet. 7, 26–73.
`Petitioner also provides detailed explanations as to how the prior art
`combination teaches or suggests each limitation and articulated reasoning to
`combine the prior art teachings, citing Dr. Almeroth’s testimony for support.
`Id.; Ex. 1003.
`Patent Owner counters that Aytac does not teach an interface device
`with which a host device communicates without using specialized software
`on the host device. PO Resp. 35−50. Patent Owner also argues generally
`that “the Petition fails to provide a proper obviousness analysis” and
`“contains numerous unsupported arguments that fail to support a conclusion
`of obviousness, including statements regarding the prior art, common
`knowledge, and the understanding of a [person of ordinary skill in the art]
`without any evidentiary support,” without specific explanations. Id. at
`30−34 (noting that “Papst does not attempt to address every evidentiary
`failing of the Petition in this response”).
`Upon consideration of the parties’ contentions and supporting
`evidence, we determine that Petitioner has demonstrated by a preponderance
`of the evidence that the teachings of Aytac, in combination with those of the
`SCSI Specification and Admitted Prior Art, renders obvious the challenged
`19
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`

`IPR2017-00714
`Patent 6,470,399 B1
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`
`claims. In our discussion below, we begin with a brief overview of the prior
`art, and then we address the parties’ contentions in turn.
`
`Overview of Aytac
`
`Aytac discloses an interface device (CaTbox) that is connected to a
`host personal computer (“PC”) and a plurality of peripheral devices.
`Ex. 1005, Abstract. Figure 1 of Aytac is reproduced below.
`
`
`As illustrated in Figure 1 of Aytac, CaTbox 102 connects to host PC
`101 via SCSI bus 113 and telephone network 123 via phone lines 116, 118,
`120, 122. Id. at 8:63–9:4. CaTBox 102 is an interface device between host
`PC 101 and peripheral devices, including printer 103, scanner 104, telephone
`handset 105, receiver 107, speaker 124, and microphone 125. Id. According
`to Aytac, CaTbox runs an operating system, CaTOS, and contains a hard
`disk accessible to the PC, as a SCSI disk called CaTdisc. Id. at Abstract.
`Thus, scanner 104 on SCSI bus 113 may be driven by CaTbox to scan
`documents to store on CaTdisc. Id.
`
`20
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`

`IPR2017-00714
`Patent 6,470,399 B1
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`
`Overview of Lin
`
`Lin describes an image scanner with automatic signal compensation.
`
`Ex. 1007, Abstract. Figure 2 of Lin is reproduced below.
`
`
`Figure 2 of Lin illustrates a block diagram of signal compensation circuit 24
`attached to charged coupled device (“CCD”) line image sensor 22. Id. at
`2:56–58. Signal compensation circuit 24 comprises signal amplifier 30 for
`amplifying the image signal and brightness signal from line image sensor 22
`to an appropriate voltage level, analog-to-digital (“A/D”) converter 32,
`sampling circuit 34 for sampling the brightness signal and generating a
`sample voltage Vs, and brightness compensation circuit 36. Id. at 3:14–24.
`
`Overview of the SCSI Specification
`
`The SCSI Specification is a technical specification published by the
`
`American National Standard for Information Systems setting forth the SCSI
`standards. According to the SCSI Specification, the SCSI protocol “is
`designed to provide an efficient peer-to-peer I/O bus with up to 16 devices,
`including one or more hosts.” Ex. 1005, Abstract. The primary objective of
`the SCSI interface is “to provide host computers with device independence
`21
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`

`IPR2017-00714
`Patent 6,470,399 B1
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`
`within a class of devices.” Id. at 6. The SCSI-2 “standard defines an
`input/output bus for interconnecting computers and peripheral devices.” Id.
`at 1. “It includes the necessary specification of the mechanical, electrical,
`and functional characteristics of the interface to allow interoperability of
`conforming devices.” Id. “SCSI-2

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